The limits of copyright protection for association mailing lists. (Legal).

While many valuable association assets are intangible, it is important that they be legally protected to the greatest extent possible. Among other things, such intangible assets include the association's name, logo, mailing lists, and database information. In particular, association mailing lists represent perhaps the most common and yet potentially valuable proprietary association resource. Therefore, it comes as somewhat of a surprise that, unlike most publications or other association creations, the components of such intellectual property are not protected by copyright. In this article, Tom Arend explains the extent of copyright protection for such lists and how an association can take advantage of such protection and work within its limitations.

Often the most valuable assets of an association are the intangible ones: the association's name, logo, publications, Web site, mailing lists, and other databases. Therefore, it is important that associations are aware of the extent and limits to which they can legally protect these assets.

In particular, association mailing lists--that is, compilations of members' personal information, such as name, address, telephone number, e-mail address, member category, and so forth--represent perhaps the most common and potentially the most valuable proprietary association resource. Mailing lists are an important resource to foster member relations and networking, a potentially lucrative source of nondues revenue, as well as a common basis for licensing and royalty agreements with association affinity partners. The value of the intellectual property inherent in such lists and databases is reflected in the fact that the royalty fees received for use of the mailing lists are recognized by the Internal Revenue Service within the royalty exception to the unrelated business income tax rules for nonprofit, tax-exempt organizations.

Since it is clear why most associations seek to legally protect their mailing lists from unauthorized use by third parties, it comes as somewhat of a surprise that, unlike most publications or other association materials, the components of such intellectual property (the raw data constituting the list) are not necessarily protected by copyright.

Only the truly original components of a mailing list--such as the list's layout, design, arrangement, selection, or organization--potentially are subject to copyright protection. The factual data or pieces of information are not. The practical effect is that an association has little recourse against a third party that simply copies and uses such raw data from an association's mailing list or database.

Legal precedent

The federal courts recently further confirmed the role of copyright--or lack thereof--in this area. In American Massage Therapy Assoc. v. Maxwell Petersen, Inc., the federal district court reviewed a copyright infringement claim brought by AMTA against a marketing and public relations firm that published Massage Today magazine. The marketing firm obtained and copied the names and addresses of individuals listed in the association's member registry for incorporation into the firm's database, which it then used to market and promote Massage Today. The firm also rented the names on its database to others for the price of $0.16 per name. The parties agreed that the association's registry, taken as a whole, was legitimately copyrightable but disagreed on whether the firm misappropriated anything original from the association by copying only the names and addresses from the database.

In arriving at its decision, the federal district court relied heavily on an earlier Supreme Court case, Feist Publications, Inc. v. Rural Tel. Service Co., Inc. In the Feist case, the Supreme Court held that for a copyright infringement claim to prevail in a case involving a mailing list or other similar data compilation, the plaintiff must show that original constituent elements of the copyrighted work were copied. The court found that raw data, such as names, phone numbers, towns, and so forth, were not original and so not subject to copyright protection because the information did not owe its creation or origin to the plaintiff.

Implications of the law

The court rulings bring out some relevant points.

1. The only way in which an association's mailing list can be protected under copyright is if the raw facts or data were to be selected, arranged, or formatted in a truly original manner. This would constitute the creativity or originality component crucial to receiving copyright protection.

2. By contrast, in both the Feist and AMTA cases, the courts found the mere listing of names and addresses was entirely typical and lacked any creative element making the layout or arrangement original. It is important to note, however, that the AMTA court found that the listing of the membership category and type of massage therapist produced a sufficiently creative selection to make that part of the registry original.

3. The Feist court also found that a compilation of facts not subject to copyright protection may still contain sufficient elements of creativity to be considered original and thus be subject to copyright protection; however, the copyright protection will apply only to those components of the work that are original to the author. Consequently, the mailing list's design may be protected but not the actual data incorporated into the list.

4. Although the association in the AMTA case did not bring a breach of contract claim against the defendant marketing firm, the opinion's factual recitation of the case reflects that the association's registry was prefaced with restrictive, contract-like language clearly establishing the association's position that the registry was confidential and proprietary material, and that a third party should receive prior authorization from the association to use the database. The court essentially ignored the association's unilateral effort to create a contractual relationship with users and impose a duty of confidentiality on and restrict use of the information by third parties generally. The court's failure to give any force to such contract/license language suggests that member list or database "shrink wrap" licenses targeted at third-party users will not protect an association's mailing list or create a proprietary right of the association to the raw data contained therein.

5. Underscoring the previous point, the AMTA court also noted that the Federal Copyright Act does not extend protection to the "pre-existing materials employed in a work." Similarly, the AMTA court also discounted the association's effort in compiling the raw information as a rationale or basis for automatically affording information in an association's mailing list copyright protection. The court, quoting other case law, agreed that "originality not industry is the touchstone of copyright protection," unambiguously rejecting any so-called "sweat of the brow" copyright protection.

In light of the recent AMTA case and the earlier Feist case, an association should not expect that the content or raw data contained in its member lists to be protected from unauthorized third-party use. Nonetheless, an association, under certain circumstances, may have a reasonable expectation that the entire list and the list's particular organization and design may be copyrightable. To increase that probability, associations should organize, design, and layout such lists and databases in a creative, atypical manner such that the whole of the compilation could be defended as an original work. Moreover, although copyright protection is far from certain in these situations; if an association does not at least claim copyright and use the appropriate copyright designations (e.g., Copyright 2003 American Association; all rights reserved), its subsequent argument claiming copyright may be undercut.

Thomas E. Arend is an attorney with the Nonprofit Organizations Practice and Jerald A. Jacobs is a partner with Shaw Pittman, Washington, D.C. Jacobs edits this column and is general counsel to ASAE.